Transfer of a Community Trade Mark

Antti Innanen and Tuomas Mattila
The Office for Harmonization in the Internal Market (OHIM)

A transfer occurs when a registered Community Trade Mark (”CTM”) or Community Trade Mark application (”CTMA”) is transferred from one proprietor to another.

The Office for Harmonization in the Internal Market (OHIM, hereinafter ”the Office”) is the official trade marks and designs office of the European Union that registers the transfers. Transfers are recorded upon request in the CTM Register of OHIM or, as far as CTM applications are concerned, in the files.

The CTM Register is a database containing details of all trade marks applied for and registered by the Office. The Register is constantly updated to take account of all of the changes in CTMs and CTMAs, such as transfers.

CTM registrations and applications are transferred primarily by way of assignment or legal succession. Most common assignments are sales and court assignments, typical legal successions are for example mergers and divisions. If the transfer is of a whole CTM application or registered CTM it is referred to as a ”total transfer”. If the transfer is limited to some of the goods or services of the CTM application or registered CTM it is referred to as a ”partial transfer”.

The practice of the office is that everything that is entered into the Register, can be transferred. This includes CTM applications, opposed applications, expired CTMs etc. The CTM does not have to be registered or published in order to be transferred. There is no fee in requesting a transfer.

Transfer or a change of name?
A transfer is not the same as a change of name of the proprietor. No transfer is involved when a natural person changes name, because the identity of the proprietor is not affected. When the name of a legal person changes, the distinguishing factor is whether the identity of the legal person remains the same. This is determined according to the national law governing the respective legal person. When a company changes its legal structure, this will constitute a transfer if a new legal person is created.

If a request is made to register a transfer, but a name change is actually involved, the Office will inform the party making the request. The office will then ask the party to give his or her consent to changing the indications concerning the proprietor in the files kept by the Office or in the Register as a change of name.

Requirements of a request for registration of transfers
The application for registration of a transfer of registered CTM must be made in one of the languages of the Office. If it is a transfer of a CTM application, the application for registration of a transfer has to be made in the first or the second language indicated in the CTM application. Supporting documents may be filed in any language of the European Community.

The Office examines the formal requirements of the transfer. Therefore, the application for registration of a transfer must contain the registration or application number, particulars of the new proprietor, the name and business address of the possible representative, the signatures of the persons requesting the recordal and proof of the transfer.

There is no need to send documentary evidence of the transfer (for example a deed of assignment) if the representative appointed acts for both the assignor and assignee. Equally, if both the assignor and assignee apply for the transfer (and sign the application), there is no need for further evidence.

Where the transfer is due to a merger or another universal succession, the original proprietor will not be available to sign the request. In these cases, it is necessary to prove the merger or universal succession, for example by attaching extracts from the trade register.

The Office also examines substantive requirements for a transfer. The Office does not register the transfer where it is clear from the transfer documents that because of the transfer the CTM is likely to mislead the public. Similarly, transfers to any natural or legal person who cannot be proprietor of a CTM can not be registered.

Legal consequences in the opposition proceedings
The transfer of a trademark has legal consequences in any opposition proceedings which are based on a transferred trade mark. The basic principle is that the new trade mark owner substitutes the old owner. If there is only one opposing CTM and this CTM has been transferred during the opposition proceedings, the new owner becomes the new opponent. If the new owner informs the Office that he does not want to continue the proceedings, the opposition is considered withdrawn.

The new owner of the opposing and transferred trade mark is required to take certain actions to invoke his rights in the proceedings. The requirements vary between transfers made before and after the filing of the opposition. Requirements vary also between transferred CTMs and national trade marks.

The importance of the registration of the transfer
Actions are required because a legal right to a transferred CTM does not imply the change of ownership in the Registry ex officio. For example in a company merger, transferred trade marks must be properly registered also in the Register. By neglecting the registration the new owner has a risk of not being able to invoke his earlier rights in the opposition proceedings.

Therefore, when filing an opposition based on transferred CTM, the new owner must take care that the request for the registration of the transferred CTM is also received by the Office. Only after the request for registration of the transfer has been received by the Office, the new owner may make the corresponding statements to the Office, e.g. if there are time limits to be observed.

Evidence of the transfer of a national trade mark
In the case of a national trade mark, the new owner of the opposing trade mark must file evidence of the transfer. It is not always necessary to file the evidence of the registration of the transfer in the national office, because it is not always required in national proceedings that the transfer is registered. The requirement to file evidence of the registration of the national marks therefore depends on national requirements.

If the opposition process has progressed to the stage where the Office is ready to take a decision on the opposition, but the transfer has not been registered and it is required by national rules, the opposition must be suspended and the opponent is required to provide evidence of registration of the transfer. If the new owner does not provide evidence, the proceedings will continue with the previous owner. If the previous owner maintains that he is not the owner anymore, the opposition has become unfounded as the opponent is no longer the owner of the earlier right. The opponent will be informed that the opposition examiner will reject the opposition as such unless he withdraws the opposition.

When there are many opposing trade marks and only one of them has been transferred, the new owner may also become the opponent. The opposition will be kept as one, and in general both opponents will have one representative. The new opponents will be treated as joint opponents, meaning that the Office will continue dealing with the case in exactly the same way as before, as one opposition, albeit with more than one opponent. The original representative will be considered as the common representative for all the opponents. However, this doesn’t mean that the parties are unable to act independently. Their earlier rights remain independent and the new opponent may always appoint a representative of their choice.

What if the transfer is not registered?
While assessing the admissibility of the opposition, it is not checked ex officio that the transfer of the CTM is requested from the Office by the opponent. Therefore, the proceedings may begin (seemingly) correctly, but in the later stages an error is detected. When the Office takes a decision on the opposition it might turn out that (as the transfer was not requested) the new owner never had a right to file the opposition in the first place. In this case the opposition is not admissible and it will be rejected.

The case might also be that the transfer of a CTM is not registered, but there is an evidence of the transfer. In this case the opposition has become unfounded. As the opponent is no longer the owner of the earlier right, he must be informed that the Office will reject the opposition as such unless he withdraws the opposition.

Disclaimer: The article is written on personal grounds of the authors and does not commit OHIM or establish any liabilities.

Further reading:
OHIM’s ”Manual of Trade Mark Practice”

>Trade Marks > Legal texts > OHIM manual on current CTM practice